OPPOSITION No B 2 688 508

Pit Süßwaren- und Nährmittelfabrik Hoffmann GmbH & Co. KG, Reichenbergerstr. 36, 83071 Stephanskirchen, Germany (opponent), represented by Huber & Schüssler, Truderinger Str. 246, 81825 München, Germany (professional representative)

a g a i n s t

Reflex Nutrition Limited, The Science Park Sea View Way, Woodingdean, Brighton East Sussex BN2 6NT, United Kingdom (applicant).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 508 is upheld for all the contested goods.

2.        European Union trade mark application No 15 115 918 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 115 918. The opposition is based on, inter alia, German trade mark registration No 302 009 067 362. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 009 067 362.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5:        Health care products; dietetic substances adapted for medical use for children and sick persons; dietary supplements adapted for medical use; milk sugar (lactose).

Class 29:        Fruits and vegetables (preserved, dried, cooked and pulverized); fruit and vegetable jellies; milk products; food supplements for non medical purposes, mainly based on preserved or dried or cooked fruits, vegetables and/or milk products.

The contested goods are the following:

Class 5:        Nutritional supplement meal replacement bars for boosting energy; Dietary supplements and dietetic preparations; Diet capsules; Food supplements; Protein dietary supplements.

Class 29:        Nut-based food bars; Fruit-based snack food; Snack foods based on nuts.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 5

The contested nutritional supplement meal replacement bars for boosting energy; diet capsules; protein dietary supplements are included in the broad category of, or overlap with, the opponent’s dietary supplements adapted for medical use. Therefore, they are identical.

The contested food supplements; dietary supplements and dietetic preparations includes, as broader categories, or overlap with the opponent’s dietary supplements adapted for medical use. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 29

The contested nut-based food bars; fruit-based snack food; snack foods based on nuts are processed food containing fruit as a base and, therefore, are highly similar to the opponent’s fruits (preserved, dried, cooked and pulverized) because they share the same nature (having a fruit base), purpose (to feed oneself), are in competition with each other and share the same relevant public. Furthermore, they have the same distribution channels.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and professionals for some of the goods i.e. dietary supplements adapted for medical use.

The degree of attention may vary from average to high, depending on the type of goods and their health-related implications.

3. The signs

Pit	Pit-Stop
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks.

The earlier mark consists of the verbal element ‘Pit’. The word has a meaning in the relevant territory in that it is a word for the deepening of a spiral track of a CD or DVD that is used for digital encryption (http://www.duden.de/rechtschreibung/Pit, online extracted on 29/03/2017). However, considering the specific technical meaning of the word, the vast majority of the relevant public would not associate this word with the abovementioned meaning when perceiving it in relation to the relevant goods.

The contested sign consists of the verbal elements ‘Pit’ and ‘Stop’ separated by a hyphen. The verbal element will be seen in its whole since it is a fairly standard expression used in the relevant territory and will be perceived as having the meaning of a brief stop for fuel, rest and/or refreshment during an automobile journey (https://en.wiktionary.org/wiki/pit_stop, online extracted on 29/03/2017). Considering the relevant goods the word is distinctive.

Visually, the signs coincide in the word ‘Pit’ constituting the earlier sign in its whole and the first verbal element of the contested sign. However, they differ in that the contested sign also consists of the word ‘Stop’ and a hyphen separating the two words in the contested sign.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the contested sign and constituting the earlier mark (‘Pit’) the one that first catches the attention of the reader.

Therefore, considering that the word ‘Pit’, constituting the earlier mark, is distinguishable in the contested sign and plays an independent role within it, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Pit’, present at the beginning of the contested sign and constituting the only verbal element of the earlier mark. The pronunciation differs in the sound of the letters ‛Stop’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, as explained above, the earlier mark will not be associated with a meaning in relation to the relevant goods by the majority of the public. The contested sign will be perceived with the meaning explained above. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eight recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are identical or highly similar and directed at the public at large and professionals whose level of attention may vary from average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually and aurally similar to an average degree and conceptually not similar. Despite the meaning of the contested sign as a whole, the common element ‘Pit’ of the marks under comparison can be still clearly perceived as a separate element in the contested sign.

Furthermore, it must be taken into account that it is the contested mark’s first word, ‘Pit’, that coincides with the only verbal element of the earlier mark and, according to case law, the relevant public normally attaches more importance to the first part of words (17/03/2004, T-183/02 and T-184/02, Mundicor, EU:T:2004:79, § 81; 10/12/2008, T-290/07, Metronia, EU:T:2008:562, § 50). Indeed, considering that the contested sign includes the earlier mark in its whole it is also highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, on an overall assessment, taking into account the fact that the average consumer, including professionals, only occasionally has the opportunity to carry out a direct comparison of the various trade marks but must rely on their imperfect mental image of them, it is reasonable to find that even a more attentive public is likely to confuse the marks or believe that the identical and highly similar goods in question come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 009 067 362. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, German trade mark registration No 302 009 067 362, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Boyana NAYDENOVA

Benjamin Erik WINSNER

Pedro JURADO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.